DETAILED ACTION
This office action is in response to applicant’s filing dated June 4, 2026.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Claims 1-6 and 8-12 are pending in the instant application. Acknowledgement is made of Applicant's amendments filed November 25, 2025. Acknowledgement is made of Applicant's amendment of claims 1 and 3; and addition of new claims 9-12. Claim 7 was previously canceled.
Priority
The present application is a CON of US Application 15/766,726 filed on April 6, 2018, which is a 371 of PCT/EP2016/074109 filed on October 7, 2016, which claims benefit of foreign priority to EP 15189239.5 filed on October 9, 2015.
Objections and/or Rejections and Response to Arguments
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated (Maintained Objections and/or Rejections) or newly applied (New Objections and/or Rejections, Necessitated by Amendment or New Objections and/or Rejections, NOT Necessitated by Amendment). They constitute the complete set presently being applied to the instant application.
New Objections and/or Rejections
Necessitated by Claim Amendment
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 9-12 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 1 and 3 recite the method consisting of applying to the plant as a foliar application an effective amount of a compound according to formula (I) or a tautomer or isomer or enantiomer thereof and prothioconazole and claims 2 and 4 recite wherein the compound of Formula I and prothioconazole are applied in a liquid composition. Thus, claims 1-4 contain the closed transitional phrase “consisting of.”
Claims 9-12, which depend from claims 1-4, recite the liquid composition further comprises a surfactant. Thus, the limitations of claims 9-12 are broader than the limitations of the claims upon which they depend.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Modified Objections and/or Rejections
Modifications Necessitated by Claim Amendment
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-6 and 8-12 are rejected under 35 U.S.C. 103 as being unpatentable over Hoffmann et al (WO 2012/072575 A1, cited in the IDS filed October 19, 2020) in view of Haas et al (WO 2013/167651 A1, cited in the IDS filed October 19, 2020) and Sztor et al (WO 2007/003320 A1, cited in a previous Office Action).
Regarding claim 1, Hoffmann teaches a method of reducing mycotoxin contamination in plants and/or any plant material and/or plant propagation material comprising applying to the plant or plant propagation material an effective amount of a compound of formula (I) (claim 1):
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wherein the mycotoxin is deoxynivalenol (claim 9), wherein the compound of formula (I) is (claim 5):
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The compound taught by Hoffman differs from the instantly claimed compound in position denoted R14. In particular, the compound taught by Hoffmann comprises a H instead of a Cl in the position denoted R14. Hoffmann further teaches in particular embodiments the compounds according to formula (I) can be combined with other active ingredients like fungicides (page 12, lines 26-27); including prothioconazole (page 12, line 29-page 13, line 12).
Hoffmann does not explicitly teach the method of reducing deoxynivalenol contamination in a plant consisting of applying the claimed compound of formula (I) and prothioconazole.
However, Hoffman teaches R14 of formula (I) stands for hydrogen or halogen (claim 1) and halogen is preferably fluorine, bromine or chlorine (page 5 ,line 23). Thus, Hoffman teaches R14 is alternatively hydrogen or halogen, including chlorine. It would have been prima facie obvious to arrive at the claimed compound from the teachings of Hoffman for use in a method of reducing mycotoxin contamination in plants and/or any plant material and/or plant propagation material comprising applying to the plant or plant propagation material wherein the mycotoxin is deoxynivalenol since compounds similar in structure would be expected to have similar properties. A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979).
Moreover, Haas teaches a method of enhancing crop plants by applying to the plants, plant parts, plant propagation material, or a plant growing locus a compound of formula (I) (claim 1); wherein the compound is Compound (II) (claim ):
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Compound of formula (II) is equivalent to instantly claimed compound of formula (I) also known as pydiflumetofen. Compound of formula (II) shows an excellent fungicidal activity and is effective for reduction of mycotoxin contamination in plants; mycotoxins (in particular deoxynivalenol) are produced for example by different Fusarium species as described in WO2012/072575 (which is the same as instantly cited Hoffman) (page 3, lines 7-16). Thus, Haas suggests pydiflumetofen is useful for reducing mycotoxin contamination including deoxynivalenol contamination.
Sztor teaches a method of reducing mycotoxin contamination of a plant and/or harvested plant material comprising treating plant propagation material with one or more fungicides (claim 1); wherein the mycotoxin is deoxynivalenol (claim 4); and wherein the fungicide is prothioconazole (claims 6 and 7). Thus, Sztor teaches a method of reducing deoxynivalenol contamination comprising administering prothioconazole.
Thus, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the teachings of the references so as to produce a composition consisting of pydiflumetofen taught by the combination of Hoffman and Haas to further consist of prothioconazole taught by Hoffman and Sztor. One would have been motivated to utilize pydiflumetofen since the prior art teaches structurally similar compounds are suitable for use in a method of deoxynivalenol contamination in plants and/or any plant material and/or plant propagation material and pydiflumetofen is effective for mycotoxin contamination and since compounds similar in structure would be expected to have similar properties. One of ordinary skill would have been motivated to combine pydiflumetofen and prothioconazole since they are both taught to be useful for reducing mycotoxin contamination including deoxynivalenol. Moreover, the instant situation is amenable to the type of analysis set forth in In re Kerkhoven, 205 USPQ 1069 (CCPA 1980) wherein the court held that it is prima facie obvious to combine two agents each of which is taught by the prior art to be useful for the very same purpose. The idea of combining them flows logically from having been individually taught in the prior art. Applying the same logic to the instant claims, one of ordinary skill in the art would have been imbued with at least a reasonable expectation of success that by combining the pydiflumetofen rendered obvious by Hoffman and Hass with prothioconazole, one would have achieved a composition suitable for use in a method of reducing deoxynivalenol contamination in plants and/or any plant material and/or plant propagation material and pydiflumetofen is effective for mycotoxin contamination.
Regarding claim 3, Haas teaches pydiflumetofen is useful for improving plant yield (claims 1, 2, and 9).
Regarding the limitations “thereby forming a treated plant” (instant claim 1); “wherein the plant has at least 80% less deoxynivalenol contamination than a plant which has not been treated” (instant claim 1); and “thereby forming a treated plant having enhanced yield characteristics as compared to a plant that has not been treated” (instant claim 3), the wherein/thereby limitations of these claims, are considered to simply express the intended result of a process step positively recited, which is not given patentable weight (See MPEP 2111.04: [T]he court noted (quoting Minton v. Nat'lAss'n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQgd 1614, 1690 (Fed. Cir. 2003)) that a "'whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.'" Hoffer v. Microsoft Corp., 405 F.3d 1396, 1399, 74 USPQgd 1481, 1483 (Fed. Cir. 2005).). In the instant case, the wherein/thereby clauses are directed to the intended result (i.e., forming a treated plant, 80% less deoxynivalenol than a plant which has not been treated, and forming a treated plant having enhanced yield characteristics as compared to a plant that has not been treated) of the process step positively recited (i.e., treating a plant with pydiflumetofen and prothioconazole to reduce deoxynivalenol contamination).
Regarding claim 6, Hoffmann teaches plants that can be protected include wheat (page 20, lines 3-5; lines 21-22; and lines 23-25). Haas teaches suitable target crops include wheat (page 8, lines 8-9). Sztor teaches the plant material treated is a wheat (claims 7-9).
Taken together, all this would result in the practice of the method of claims 1, 3, and 6 with a reasonable expectation of success.
Regarding claims 2 and 4, Hoffmann teaches the active ingredient may be applied with a liquid formulation of the fungicide (page 51, lines 1-3). Haas teaches a compound of formula (I) may be formulated as a liquid composition (page 21, lines 5-8). Sztor teaches the pesticides (including fungicides) may be used in unmodified form but is normally used in the form of compositions; suitable carriers and adjuvants can be liquid (page 7, lines 21-24). Thus, it would have been prima facie obvious to formulate the composition consisting of pydiflumetofen and prothioconazole as a liquid composition in view of the teachings of the cited art which establish that both pydiflumetofen and prothioconazole can be formulated as a liquid composition.
Taken together, all this would result in the practice of the method of claims 2 and 4 with a reasonable expectation of success.
Regarding claim 5, Hoffman teaches plant material treated by the disclosed method (claim 11). Haas teaches a tomato plant treated with a compound of formula (II) (page 25, lines 29-30). Harvested plant material obtained from plants treated using the method of the invention will have less mycotoxin contamination than harvested plant material from untreated plants (page 4, lines 8-10). Moreover, one of ordinary skill in the art before the effective filing date of the invention would recognize that treating a plant with the method of reducing deoxynivalenol contamination consisting of pydiflumetofen and prothioconazole rendered obvious by the cited art would result in a plant treated by such method.
Regarding claim 8, Hoffmann teaches plant material to be treated include flowers (page 19, line 29). Sztor teaches harvested plant material includes flowers (page 4, lines 25-26). It would have been prima facie obvious to one of ordinary skill in the art to apply the pydiflumetofen and prothioconazole to reduce deoxynivalenol during flowering since the cited art teach administering the disclosed composition to flowers. Thus, resulting in the method of claim 8 with a reasonable expectation of success.
Regarding claims 9-12, Hoffmann teaches the composition according to the invention may also comprise additional components; in particular, the composition may further comprise a surfactant; for example, polyacrylic acid salts, lignosulphonic acid salts, phenolsulphonic or naphthalenesulphonic acid salts, polycondensates of ethylene oxide with fatty alcohols or with fatty acids or with fatty amines, substituted phenols (in particular alkylphenols or arylphenols), salts of sulphosuccinic acid esters, taurine derivatives, phosphoric esters of polyoxyethylated alcohols or phenols, fatty acid esters of polyols, and derivatives containing sulphate, sulphonate and phosphate functions; the presence of at least one surfactant is generally essential when the active compound and / or the inert support are water-insoluble and when the vector agent for the application is water; and preferably, surfactant content may be comprised from 5% to 40% by weight of the composition (page 49, lines 14-25).
Moreover, Haas teaches the active ingredient is employed in pure form, a solid active ingredient for example in a specific particle size, or, preferably, together with - at least – one of the auxiliaries conventionally used in the art of formulation, such as extenders, for example solvents or solid carriers, or such as surface-active compounds (surfactants) (page 10, lines 27-30); surface-active compounds include surfactants (page 11, lines 14-15); suitable non-ionic surfactants include alkyl phenols and numerous surfactants which overlap those disclosed by Hoffmann. Moreover, Haas teaches it being possible as a rule for 0 to 25%, especially 0.1 to 20%, of the composition to be surfactants (% in each case meaning percent by weight) (page 14, lines 24-26).
Sztor teaches the pesticides (including fungicides) may be used in unmodified form but is normally used in the form of compositions; it can be applied together with further carriers, surfactants (page 7, lines 21-22) and typically, a pre-mix formulation for seed treatment application comprises an auxiliary/surfactant in an amount of 0 to 50 %, especially 0.5 to 40 %, based on the pre-mix formulation (page 9, lines 19-21).
Thus, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to formulate the composition consisting of pydiflumetofen and prothioconazole as a liquid composition further comprising a surfactant in view of the teachings of the cited art which establish that both pydiflumetofen and prothioconazole can be formulated as a liquid composition further comprising a surfactant.
Regarding the amounts of instant claims 9 and 11, MPEP 2144.05 states: In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Even a slight overlap in range establishes a prima facie case of obviousness. In re Peterson, 65 USPQ2d 1379, 1382 (Fed. Cir. 2003).
Taken together, all this would result in the practice of the method of claims 9-12 with a reasonable expectation of success.
Response to Arguments
Applicant argues:
Applicant notes the affirmative steps of forming a "treated plant" introduced into claims 1 and 3 thus clearly impart a functional limitation on the claimed methods, thus affecting the scope of these claims. That is, not all applications of pydiflumetofen, and prothioconazole would necessarily achieve 80% reduction in deoxynivalenol contamination and/or provide enhanced yield characteristics. Thus, these affirmative steps are limiting claim elements and not simply results being claimed.
Examiner's response:
The above argument has been carefully considered and has not been found persuasive.
The instant claims do not require any particular amounts of pydiflumetofen, and prothioconazole to be administered just that these compounds are administered to reduce deoxynivalenol contamination. As set forth above, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the invention to arrive at a
Method of reducing deoxynivalenol contamination and enhancing plant yield in plants and/or any plant material and/or plant propagation material comprising applying to the plant or plant propagation material an effective amount of a combination consisting pydiflumetofen and prothioconazole in view of the cited art. As set forth above, the wherein/thereby limitations of these claims, are considered to simply express the intended result of a process step positively recited, which is not given patentable weight (See MPEP 2111.04: [T]he court noted (quoting Minton v. Nat'lAss'n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQgd 1614, 1690 (Fed. Cir. 2003)) that a "'whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.'" Hoffer v. Microsoft Corp., 405 F.3d 1396, 1399, 74 USPQgd 1481, 1483 (Fed. Cir. 2005).). In the instant case, the wherein/thereby clauses are directed to the intended result (i.e., forming a treated plant, 80% less deoxynivalenol than a plant which has not been treated, and forming a treated plant having enhanced yield characteristics as compared to a plant that has not been treated) of the process step positively recited (i.e., treating a plant with pydiflumetofen and prothioconazole to reduce deoxynivalenol contamination).
Applicant argues:
Applicant's Examples A and B establish significant reduction in deoxynivalenol (DON) content, including the results in Table 1 showing greater than 80% reduction as required in claim 1. Hoffman describes pyrazole carboxylic acid amides useful for the reduction of mycotoxin contamination in plants. The Office acknowledges the distinction between the compound of Hoffmann and pydiflumetofen is chloro-substituted as compared to the -H group of the cited composition of Hoffman. However, the compound of Hoffmann showed an activity of > 80% of inhibition of DON and growth inhibition of Fusarium graminearum. Tested compounds of Hoffmann thus are indicated as effective for their desired purpose. Regardless of any similar structures, applicant submits one skilled in the art would not necessarily have had any reason to make the proposed solution. The unmodified compound of Example 1 of Hoffmann was established as effective for the desired purpose. Accordingly, one skilled in the art would not have had any reason to consider the proposed modification. In fact, the specification of Hoffmann, including the cited passage on page 5, does not express any preference for this substitution.
Examiner's response:
The above argument has been carefully considered and has not been found persuasive.
MPEP 2123.I. states:
"The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). As set forth above, Hoffmann teaches a method of reducing mycotoxin contamination in plants and/or any plant material and/or plant propagation material comprising applying to the plant or plant propagation material an effective amount of a compound of formula (I) (claim 1):
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wherein the mycotoxin is deoxynivalenol, including a closely similar compound to the claimed compound,
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and in particular embodiments the compounds according to formula (I) can be combined with other active ingredients like fungicides, including prothioconazole. As set forth above, Hoffman teaches Hoffman teaches R14 of formula (I) stands for hydrogen or halogen (claim 1) and halogen is preferably fluorine, bromine or chlorine (page 5 ,line 23). Thus, Hoffman teaches R14 is alternatively hydrogen or halogen, including chlorine. As set forth above, it would have been prima facie obvious to arrive at the claimed compound from the teachings of Hoffman for use in a method of reducing mycotoxin contamination in plants and/or any plant material and/or plant propagation material comprising applying to the plant or plant propagation material wherein the mycotoxin is deoxynivalenol since compounds similar in structure would be expected to have similar properties. A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979).
Moreover, one of ordinary skill in the art would have been further motivated to utilize the compound suggested by Hoffmann in view of the teachings of Haas since Hass teaches the claimed compound is useful in a method of enhancing crop plants by applying to the plants, plant parts, plant propagation material, or a plant growing locus a compound of formula (I) (claim 1); wherein the compound is Compound (II) (claim ):
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As set forth above, Hass teaches Compound of formula (II) shows an excellent fungicidal activity and is effective for reduction of mycotoxin contamination in plants; mycotoxins (in particular deoxynivalenol) are produced for example by different Fusarium species as described in WO2012/072575 (which is the same as instantly cited Hoffman) (page 3, lines 7-16). Thus, as set forth above, Haas clearly teaches pydiflumetofen is useful for reducing mycotoxin contamination including deoxynivalenol contamination.
Applicant argues:
Regardless of any mention in Haas of compound (II), the reference does not include any teaching or direction to combine with prothioconazole. Moreover, the passages of Hoffmann relied on at pages 12-13 listed above are but a minor portion of the listing spanning from pages 12-18 listing possible "other active ingredients." Notably, none of the working examples of Hoffmann combine active ingredients.
Examiner's response:
The above argument has been carefully considered and has not been found persuasive.
MPEP 2123 states:
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). In the instant case, the fact that none of the examples of Hoffman include prothioconazole does not teach away from selecting this agent from the alternatives taught as suitable for use for the disclosed methods.
Moreover, Applicants are reminded that it must be remembered that the references are relied upon in combination and are not meant to be considered separately as in a vacuum. It is the combination of all of the cited and relied upon references, which make up the state of the art with regard to the claimed invention. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference and it is not that the claimed invention must be expressly suggested in any one or all of the references; but rather the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In the instant case, as set forth above, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the teachings of the references so as to produce a composition consisting of pydiflumetofen taught by the combination of Hoffman and Haas to further consist of prothioconazole taught by Hoffman and Sztor. One would have been motivated to utilize pydiflumetofen since the prior art teaches structurally similar compounds are suitable for use in a method of deoxynivalenol contamination in plants and/or any plant material and/or plant propagation material and pydiflumetofen is effective for mycotoxin contamination and since compounds similar in structure would be expected to have similar properties. One of ordinary skill would have been motivated to combine pydiflumetofen and prothioconazole since they are both taught to be useful for reducing mycotoxin contamination including deoxynivalenol. Moreover, the instant situation is amenable to the type of analysis set forth in In re Kerkhoven, 205 USPQ 1069 (CCPA 1980) wherein the court held that it is prima facie obvious to combine two agents each of which is taught by the prior art to be useful for the very same purpose. The idea of combining them flows logically from having been individually taught in the prior art. Applying the same logic to the instant claims, one of ordinary skill in the art would have been imbued with at least a reasonable expectation of success that by combining the pydiflumetofen rendered obvious by Hoffman and Hass with prothioconazole, one would have achieved a composition suitable for use in a method of reducing deoxynivalenol contamination in plants and/or any plant material and/or plant propagation material and pydiflumetofen is effective for mycotoxin contamination.
Applicant argues:
Sztor does not describe any actual testing using prothioconazole, alone or with any other active ingredients, including pydiflumetofen. While Sztor may mention prothioconazole there is no reason from this reference to make the selection to combine with pydiflumetofen as the other compound.
Examiner's response:
The above argument has been carefully considered and has not been found persuasive.
Applicants are reminded that it must be remembered that the references are relied upon in combination and are not meant to be considered separately as in a vacuum. It is the combination of all of the cited and relied upon references, which make up the state of the art with regard to the claimed invention. The teachings of Sztor were relied upon to establish that it was known in the art to utilize prothioconazole in a method of reducing deoxynivalenol contamination in plants. The teachings of Hoffman and Haas establish that it was known in the art to apply compositions to the plant or plant propagation material in a method of reducing mycotoxin (deoxynivalenol) contamination. Moreover, the teachings of Sztor further support that this was known in the art (see page 9, lines 35-36). Sztor teaches conventional technologies for controlling mycotoxins, such as foliar spray of fungicides may also with the present invention. Thus, the skilled artisan would have had a reasonable expectation of success that the combination of prothioconazole and pydiflumetofen could be applied as foliar application since it was known that foliar application was a conventional technique for controlling mycotoxins and since prothioconazole and pydiflumetofen where known to be useful for reducing mycotoxin contamination including deoxynivalenol.
Applicant argues:
Claim 1 now requires the plant treated by the method has at least 80% less deoxynivalenol contamination than a plant which has not been treated. The cited references that only include the possibility of using the individual components of the required combination provide no indication that their combination would provide this affirmative limitation of claim 1. In addition, the methods of claims 1 and 3 each consist of the step of applying the combination pyridiflumetofen and prothioconazole. Thus, other active ingredients are not applied in accordance with these methods. Accordingly, the claimed methods exclude using any of the compositions tested in Hoffmann (i.e., Examples 1, 2, and 3) or tested in Sztor (i.e., fludioxonil). Applicant respectfully submits there is no teaching or direction from the cited references to combine pydiflumetofen and prothioconazole in the manner required in claims 1 and 3 where these are the only actives utilized and applied and defined by the additional affirmative limitations, i.e., the method of claim 1 for reducing deoxynivalenol (DON) contamination in a plant where the plant treated has at least 80% less deoxynivalenol contamination than a plant which has not been treated and the method of claim 3 for increasing plant yield by reducing deoxynivalenol contamination in a plant.
Examiner's response:
The above argument has been carefully considered and has not been found persuasive.
As set forth above, regarding the limitation “wherein the plant has at least 80% less deoxynivalenol contamination than a plant which has not been treated, the wherein limitations of this claim, is considered to simply express the intended result of a process step positively recited, which is not given patentable weight (See MPEP 2111.04: [T]he court noted (quoting Minton v. Nat'lAss'n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQgd 1614, 1690 (Fed. Cir. 2003)) that a "'whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.'" Hoffer v. Microsoft Corp., 405 F.3d 1396, 1399, 74 USPQgd 1481, 1483 (Fed. Cir. 2005).). In the instant case, the wherein clause is directed to the intended result (i.e., 80% less deoxynivalenol than a plant which has not been treated) of the process step positively recited (i.e., treating a plant with pydiflumetofen and prothioconazole to reduce deoxynivalenol contamination).
With regard to the argument that the methods of the instant claims each consist of the step of applying the combination pyridiflumetofen and prothioconazole, as set forth above, Hoffmann teaches in particular embodiments the compounds according to formula (I) can be combined with other active ingredients like fungicides (page 12, lines 26-27); including prothioconazole (page 12, line 29-page 13, line 12). Thus, Hoffmann suggest combining a structurally similar compound with prothioconazole. Moreover, Haas teaches
Compound of formula (II) shows an excellent fungicidal activity and is effective for reduction of mycotoxin contamination in plants; mycotoxins (in particular deoxynivalenol) are produced for example by different Fusarium species as described in WO2012/072575 (which is the same as instantly cited Hoffman) (page 3, lines 7-16). Thus, Haas suggests pydiflumetofen is useful for reducing mycotoxin contamination including deoxynivalenol contamination. As set forth above, Sztor teaches a method of reducing deoxynivalenol contamination comprising administering prothioconazole. As set forth above, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the teachings of the references so as to produce a composition consisting of pydiflumetofen taught by the combination of Hoffman and Haas to further consist of prothioconazole taught by Hoffman and Sztor. One would have been motivated to utilize pydiflumetofen since the prior art teaches structurally similar compounds are suitable for use in a method of deoxynivalenol contamination in plants and/or any plant material and/or plant propagation material and pydiflumetofen is effective for mycotoxin contamination and since compounds similar in structure would be expected to have similar properties. One of ordinary skill would have been motivated to combine pydiflumetofen and prothioconazole since they are both taught to be useful for reducing mycotoxin contamination including deoxynivalenol. Moreover, the instant situation is amenable to the type of analysis set forth in In re Kerkhoven, 205 USPQ 1069 (CCPA 1980) wherein the court held that it is prima facie obvious to combine two agents each of which is taught by the prior art to be useful for the very same purpose. The idea of combining them flows logically from having been individually taught in the prior art. Applying the same logic to the instant claims, one of ordinary skill in the art would have been imbued with at least a reasonable expectation of success that by combining the pydiflumetofen rendered obvious by Hoffman and Hass with prothioconazole, one would have achieved a composition suitable for use in a method of reducing deoxynivalenol contamination in plants and/or any plant material and/or plant propagation material and pydiflumetofen is effective for mycotoxin contamination.
Conclusion
Claims 1-6 and 8-12 are rejected.
No claim is allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/Rayna Rodriguez/ Primary Examiner, Art Unit 1628
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